Posted
by
samzenpus
on Monday August 16, 2010 @09:16AM
from the who-would-jesus-sue dept.

An anonymous reader writes "A Wisconsin priest has God on his car but Best Buy's lawyers on his back. Father Luke Strand at the Holy Family Parish in Fond Du Lac says he has received a cease-and-desist letter from the electronics retailer. From the article: 'At issue is Strand's black Volkswagen Beetle with door stickers bearing the name "God Squad" in a logo similar to that of Best Buy's Geek Squad, a group of electronics troubleshooters. Strand told the Fond du Lac Reporter that the car is a creative way to spur discussion and bring his faith to others. Best Buy Co. tells the Milwaukee Journal Sentinel that it appreciates what Strand is trying to do, but it's bad precedent to let groups violate its trademarks.'"

Aren't those the colors of Halloween? Most American religious folk confuse Halloween with some kind of Satan worship (instead of the religious holiday All Hallow's eve, or the older Celtic Fall holiday).

Nope; there's a winner-take-all clause. If you can demonstrate that your mark is famous (and the Geek Squad mark might be), you can control it in all markets. It's a horrible law (like much of copyright, trademark, and patent law), but it's there.

I was just going to post the same thing. Looking through 12 pages of "geek squad" images, I don't see any images that Best Buy uses that could be confused with this one.

I hope that's sarcasm, there's plenty of similarity between the "God Squad" logo they used on their Beetle and the "Geek Squad" logos on their Beetles, changing the letters in one word makes it a pretty simple case of trademark rip-off.

I think it's easy to tell the difference just by reading the top word, but Best Buy can't afford to allow an unauthorized entity to reappropriate their trademark.

I believe there is also an exception to a different line of business. It would be quite a stretch to say this religious man is any way trying to claim to work on breaking computers. Just as Apple Records was unable to win out against Apple Computers because Apple Computers was not in the music business, Best Buy is in the overcharging and breaking computers business, and this guy is in the religious business. Unless Best Buy is looking at expanding into religion...God help us all...

It would be quite a stretch to say this religious man is any way trying to claim to work on breaking computers.

I don't know... Listening to some of the expletives around the office, I believe many people are invoking the help of a deity in hopes that their computer issues don't wreak havoc on the work they've done so far.

The problem is that Best Buy needs to send him a Cease and Desist when they become aware of possible infringement or they waive their rights to assert the trademarks in other cases. It's not that they want to be dicks to that particular guy, it's that if they let him get away with it, they lose their right to assert trademark infringement in future cases. The Icons and VW Bug thing are close enough that no reasonable person would say it's not derivative of Geek Squad's logos, so if they let him get away with it they have to let everyone get away with it. There is significant legal precedent that non-asserted trademarks are not valid trademarks. It's much safer for them to just send this guy a C&D than to have a different, real trademark infringement case a year down the road where the defense claims that Geek Squad was aware of other trademark violations that they took no action to end those violations, therefore their trademark claim should be thrown out.

GM got into some trouble when they named a Chevy a "Beretta". The armorer of the same name took them to court [wikicars.org] for cheapening the brand but the resulting out of court settlement [beaterreview.com] was more symbolic than anything else. Perhaps the gun maker realized that it was bringing ridicule on itself when "Car and Driver" did a head-to-head comparison of the two Berettas, finding a pistol had better acceleration, but the coupe had more passenger room.

Hold on a second, doesn't the type of service being offered play a factor as well? Unless this pastor offers a service where he comes into your home, searches for porn images on your computer, and then passes those images around to his buddies, I don't think there's a case for infringement here.

I hope that's sarcasm, there's plenty of similarity between the "God Squad" logo they used on their Beetle and the "Geek Squad" logos on their Beetles, changing the letters in one word makes it a pretty simple case of trademark rip-off.

No sarcasm intended. I thought they were referring to the image in the article summary on the front page, which can be seen here [universityparkchurch.com]. Still, I think Best Buy is being fairly petty, and there's virtually no room for anyone to get confused between the two might do.

I know that legally companies have to enforce trademarks or risk losing them. However, for a case like this where there is no actual damage to their business and no real risk of confusion, the best solution from a PR perspective would be to offer a royalty-free license to the trademark and its variant to the person in question.

You know, instead of the traditional "cease-and-desist" letter, you could send a "we notice you borrowed from our logo - we are required to contact you by trademark law, and we will offer you a royalty-free license for this use, in a limited context, if you get in touch with us".

That would completely avoid the nasty press these companies for doing this, and keep the trademark lawyers happily occupied.

Why can't we live in the kind of more civil society where we look for positive solutions to problems in this way instead of simply defaulting to the negative?

In theory, maybe that would be a good idea, but in practice it's walking into dangerous territory. First off, it could be seen as endorsement of this guys message, and corporations generally try to avoid religious endorsements since it puts them at odds with all other religions. This gets especially tricky if then other religions start to ask for the same treatment. What if an Islamist group wants to do the same thing? If Best Buy says no, they piss off 1.4 billion Muslims, and also look discriminatory. If they say yes, they piss off a nation full of fear mongerers and bigots who accuse them of terrorism. There's a million other ways that could go poorly, Best Buy really has no choice but to put a stop to this.

It could, but the bad PR from this thing could be plenty bad. I would rather do what the parent post stated than go after a priest for trademark infringement on something which isn't making him a penny.

I think you should reread the GP again. He referred to "a nation full of fear mongerers and bigots who accuse them of terrorism". He did not claim that all Christians were fear mongers and bigots he said the nation was.

And after the all the crontroversy over the planned Islamic information centre (not a mosque as the media portrays) near ground zero it's a fair assessment. Especially since there are other Islamic information centres in the area that pre-date the completion of the first World Trade Center building.

But hey, when did fear mongers and bigots let silly things like facts get in the way.

If it were only one time it might be ok, but religious groups seem to think themselves exempt from trademark and copyright law.

There are lots of stories of religious groups copying whatever they like to put religious propaganda on them. I remember when the lord of the rings came out, one group took the movie poster, replaced "Ring" with "King" and replaced Gandalph with Jesus. Now you may say that's just parody, but I don't really buy it when the point is to promote a religious message, not poking fun of the original.

This really has nothing to do with the word Geek or the word Squad for that matter. If you look at the car the church made up and then look at a photo of a Geek Squad car you can see the unmistakable resemblance. In fact, I'd dare say a pretty blatant copy with a few details changed to fit the church. Now if Taco get a VW Beetle, paints it with GeekSquad colors and then sticks on a logo that is _very_ close to the trademarked one, then yes, Taco will get a C&D too.

Hey, "Best Buy" has got some issues if God ever figures out how to file an amicus brief.

For prior art, "God Squad" existed well ahead of "Geek Squad". But, if t he issue is the "Black and White", sorry, police departments around the country have that one. If its the logo on the door, if the priest changes it to a nice blue and white shield, or even a cross and avoids the oval shape, then Best Buy has nothing.

They are not being necessarily being overzealous. In the US, trademarks MUST be defended to be valid. If they failed to defend against this possible trademark issue, then the next guy that does a geek squad look alike can point to this case to strengthen his case that the trademark has become generic.

Trademarks aren't enforced on a word-by-word basis. The issue would be the similarity of the logo as a whole.

The trademark claim may be invalid since the priest is not selling electronics or technical support, and presumably isn't using it in a commercial context at all. On the other hand, I'm not sure you could rule out a claim of dillution.

Trademarks must be considered in their entirety. The fact that "squad" is generic is irrelevant, because the entire mark and the entire alleged infringing use must be compared. The "Geek Squad" trademark is most certainly not generic.

Furthermore, the fact that two words are different is not dispositive for confusion. Instead, the question is the likelihood of confusion of the source. Might a consumer think "God Squad" is a subsidiary of "Geek Squad" or otherwise related? Maybe "God Squad" is the team of se

Nah, doesn't apply because it's not ironic, and it's not targeted at the Geek Squad.

If you did a car that looked like the geek squad car, with a logo that was the same except it said, "Week Squad" and ran around fixing peoples computers with a sledgehammer, and filming it...THAT would be parody.

Or in this case, if these people ran around praying over peoples computers and did it specifically to make fun of the Geek Squad, that would be legit.

Having the same logo on a legitimate enterprise isn't protected by parody/freedom of expression laws.

IANAL, but AFAIK parody requires the work to be a commentary on the original work. God Squad would have to be about Geek Squad in a substantial way. Also, they would have to use a minimal amount of protected material, and certain other thresholds.

Satire does not require a work to be a commentary on the original work. God Squad could be about anything, and be re-appropriating Geek Squad material for humorous effect. But Satire is not protected in this country in the same way that Parody is.

If the priest was performing services similar to Best Buy's I could see this being valid, but considering the context is a completely different field, wouldn't this just be thrown out? Or am I confusing trademark with something else?

Walleye-mart would be OK if it was just the name of the seafood restaurant, but if the their logo were styled closely after the Wall-mart logo, then they might run into trouble, I believe, because it would have a strong likelihood of making people think that the restaurant is associated with Wall-mart.

(1) Any person who shall, without the consent of the registrant—
(a) use in commerce any reproduction, counterfeit, copy, or colorable imitation of a registered mark in connection with the sale, offering for sale, distribution, or advertising of any goods or services on or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive; or
(b) reproduce, counterfeit, copy, or colorably imitate a registered mark and apply such reproduction, counterfeit, copy, or colorable imitation to labels, signs, prints, packages, wrappers, receptacles or advertisements intended to be used in commerce upon or in connection with the sale, offering for sale, distribution, or advertising of goods or services on or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive,

That logo on that car is designed to fool people, and it is for the purpose of offering services. In a best case scenario, the priest is hoping that people will see it, think it is 'Geek Squad', then do a double take and realize that it isn't. In a worst case scenario, some people may think there is an actual connection. Off the top of my head, I can think of a couple of large businesses that have an open religious connection. Chick-fil-a and In and Out Burger both have corporate policy surrounding reli

As a tech, I find that prayer is often a tool in my methodology when working with windows...

You must be an exception, cursing seems to be the norm... then again in Microsoft's defense it seems to be one thing uniting developers, server administrators and support people. I think it's got something to do with the computer not caring so you really can tell it what a goddamned fucked up piece of shit it is without it taking offense.

If he isn't selling anything or competing with them, do they have legal grounds to make him cease and desist? I thought imitation was the highest form of flattery. Do we now outlaw spoof, satire, and creative imitation?

OK, here goes. The issue is not that the church is creating customer confusion by between its services and Best Buy's. The issue is that its misappropriation of the trademark *dilutes* the value of that trademark to its rightful owner.

There are classes of ways in which dilution can occur, both of which potentially apply here: loss of distinctiveness, and tarnishment. (1) Best Buy has invested considerable money in creating a recognizable symbol. By misappropriating that symbol, the church is denying them the benefit of that investment by reducing the distinctiveness of the service mark. (2) Many of Best Buy's potential customers may have negative opinions of the Catholic Church because of its handling of the clergy sex abuse scandal. The church's misuse of Best Buy's service mark "tarnishes" that mark with a scandal to which Best Buy is not a party. Even supposing you think such a reaction to the scandal is unreasonable and excessive, that reaction should be the church's problem, not Best Buy's. If Best Buy drove around in cars emblazoned with the ecclesiastical arms of the local archbishop, he'd have a right to object that the dignity of his see shouldn't be tied to the quality of service Best Buy offers its customers.

Both of these arguments hinge on the fact that the logo used on the vehicles is obviously a copy of the Geek Squad logo. It is simply not credible that the priest arrived at this design on his own. If he'd come up with the "God Squad" name and his own logo, that would be a different matter. You can have a "Speedy Pizza Delivery" and a "Speedy Muffler Service" because they're in different industries, but if the pizza shop copies the Speedy Muffler trademark to promote their business, they've gone over the line.

In summary, there gray areas in trademark use, but this use is not one of them. Clearly the church is violating Best Buy's trademark rights. I don't think they are intending harm, and I think in cases of such non-commercial uses it might be nice if the trademark owner was polite and understanding rather than threatening. Nonetheless, the church really ought to cease and desist using Best Buy's trademark for its own purposes, even if it believes those purposes are admirable.

OK, here goes. The issue is not that the church is creating customer confusion by between its services and Best Buy's. The issue is that its misappropriation of the trademark *dilutes* the value of that trademark to its rightful owner.

Nice analysis, but you missed one part that you touched on:

In summary, there gray areas in trademark use, but this use is not one of them. Clearly the church is violating Best Buy's trademark rights. I don't think they are intending harm, and I think in cases of such non-commercial uses it might be nice if the trademark owner was polite and understanding rather than threatening. Nonetheless, the church really ought to cease and desist using Best Buy's trademark for its own purposes, even if it believes those purposes are admirable.

Yes, it's almost certainly dilution under 15 USC 1125(c) (Lanham Act sec. 43). However, under under 15 USC 1125(c)(4)(B), "noncommercial use of a mark" is not actionable. It's unlikely that the priest is engaging "in commerce", nor would any Federal court be willing to call charitable donations to a church "commerce" within the meaning of the commerce clause, since they would run up against all sorts of political backlash. So, as long as he doesn't

Geek Squad has to actively defend their trademark, otherwise they risk losing it. Looking at the FP's link [i4u.com] with a bit more information, it sounds to me like Best Buy's PR woman was hinting at an appropriate solution. I bet they find a way to make everyone happy and simply license the trademark to Father Luke for his "God Squad" use.

Best Buy probably has a case against them, as the car and the logo bear a very similar aesthetic and it would be pretty difficult to argue that it was just a coincidence.

It isn't that easy. They must also convince the court that the public might be misled into believing that it is getting Best Buy's product when it is not. Their only alternative is to claim dilution which would require that it be used to advertise an unrelated product or be used in a way that would "tarnish" it by creating negative ass

If he was mocking Geek Squad, he would have a slam dunk case under U.S. law. I was going to say that he is not. However, I could make a case that even though belittling Geek Squad was not the intention of this project, there is an element of satire in this "God Squad" car (which is a defense against charges of trademark infringement in the U.S.).

the priest started charging exorbitant amounts for things that a user with 30 seconds on google could figure out on their own.
"$80 rosary installation - bring in your rosary, and one of our trained technicians can install it around your neck. *Removal of existing necklaces only $5 each for Reward Zone members"

Hey lawyers do any of you even know what a trademark is anymore. Its a mark used in your trade.

YOUR TRADE.

Unless they are claiming he is using faith healing to fix computers (more effective then the geek squad yes) They have no business complaining. If I want to open up geek squad plumbing there is nothing they can do about it.

Considering how virtually every religious sticker I see on a car is a (poorly done) rip-off of an existing trademarked character or logo, it's kind of refreshing to see them actually get called on it. Thou Shalt Not Steal. Unless it looks cool and you can make a mint by altering it to promote your church...

I remember hearing it as a little kid in the 70s, so I don't know how much further back it actually goes.Because of that, I'm guessing the Geek Squad won't have a slam dunk if they press charges.(That and parody stuff.)ianal (just like almost all of the rest of slashdot)

God Squad has been in use by (mostly, i think) Christian churches since about 100 milliseconds after the debut of the Mod Squad pilot.
Since 1968.
I think there's a Rabbi in NYC who has something antecedently similar going on, too.

And look like they're endorsing a religion causing backlash from other religious groups and making them look bigoted if they don't let anyone of any faith do the exact same thing (pissing of a lot of the Christians) ? Yeah, that's probably not an avenue they want to pursue.